WEDNESDAY, 6 MAY 2009
Poland: interest interpretations
The legitimate interest to have standing in proceedings before the Polish Patent Office is very interesting issue. Recently the Supreme Administrative Court of the Republic of Poland analyzed this problem in two jugments.
In June 2005, Societe Des Produits Nestle S.A asked the Polish Patent Office to make a decision on the lapse of the right of protection for "3in 1" R-90234 trade mark owned by "MOKATE" sp. z o.o. from Zory. The request was based on article 28(1) of the old Polish Trade Mark Act - TMA - (in Polish: ustawa o znakach towarowych) of 1985, published in Dziennik Ustaw (Journal of Laws) of 1985 No 5, pos. 15, with later amendments:
The right deriving from registration of a trade mark shall expire if the person entitled has not used the mark within a period of three consecutive years in the Republic of Poland.and article 169(1) of the Polish Act of 30 June 2000 on Industrial Property Law - IPL - (in Polish: ustawa Prawo wlasnosci przemyslowej) of 30 June 2000, published in Dziennik Ustaw (Journal of Laws) of 2001 No 49, pos. 508, consolidated text on 13 June 2003, Dziennik Ustaw No 119, pos. 1117, with later amendments.
1. The right of protection for a trade mark shall also lapse:The request was based on non-use of "3 in 1" trade mark. Mokate filed a motion asking the PPO to reject Nestle's request. The motion was based on the lack of legitimate interest on Nestle's side. The PPO agreed with Mokate's argument. Nestle filed a complaint to the District Administrative Court in Warsaw. The DAC in its judgment of 3 December 2007, act signture VI SA/Wa 1036/07 rejected Nestle's complaint. The company filed a cassation complaint to the Supreme Administrative Court. The SAC in its judgment of 12 March 2009, act signature II GSK 774/08 held that conditions of legitimate interest are based on two levels -- procedural -- because it is justifying the initiation of administrative proceedings in a particular matter and "substantive", as it results from the provisions of the law that apply to certain rights and obligations of a person (legal or natural). Although the substantive law is the source for the legitimate interest but the legal interest as a condition that justfies the initiation of the procedure for declaration on the lapse of the right of protection for the trademark is primarily a category of administrative procedure - one of the principles of this proceedings as to its proper initiation. The cassation complaint was rejected.
(i) on failure to put to genuine use of the registered trade mark for the goods covered by the registration for a period of five successive years after a decision on the grant of a right of protection has been taken, unless serious reasons of non-use thereof exist,
2. In the cases referred to in paragraph (1), the Patent Office shall make a decision on the lapse of the right of protection for the trade mark at the request of any party having a legitimate interest therein.
In case of a request for invalidation of the right of protection to PLANTAGINIS R-105263 trade mark filed by Polish company Gemi from Karczew, the Supreme Administrative Court in its judgment of 20 November 2008, act signature II GSK 503/08 ruled that it is usually assumed that legitimate interest is the normative category of the substantive law and its source is the substantive law. On this basis the party of an administrative proceedings is entitled to request to specify his or her powers and duties or require an administrative court or body to perform an examination of a legal act or acts in order to protect him or her against violations that was made by this legal act or acts and to lead to a situation that it is consistent with the law.
The legitimate interest may also derive from legal norms not only belonging to the administrative law. The confirmation of legitimate interest is always due to the likely connection between the norm of the substantive law and the situation of legal entity to the effect that the act of application of this legal norm (eg, an administrative decision) may affect the legal position of this entity in the field of the substantive law. The SAC also agreed with the opinion of academics that there aren't any universal definition of a legitimate interest in the field of industrial property law that would include complex situations to justify the submission of the request for invalidation of an exclusive right.
The SAC noted that the case-law indicates article 20 of the Constitution of the Republic of Poland of 2nd April 1997 as published in Dziennik Ustaw (Journal of Laws) No. 78, pos. 483
A social market economy, based on the freedom of economic activity, private ownership, and solidarity, dialogue and cooperation between social partners, shall be the basis of the economic system of the Republic of Poland.and article Paragraph 6(1) of the Law on Freedom of Economic Activity (in Polish: ustawa o swobodzie dzialalnosci gospodarczej) corresponding to the content of article 5 of the Act of 19 November 1999 - Law of economic activity (in Polish: Prawo dzialalnosci gospodarczej), Dziennik Ustaw (Journal of Laws) No. 101, pos. 1178, as amended)
The assumption, conduct and termination of economic activity shall be free to all on an equal-rights basis, subject to conditions determined in provisions of law.are the basis for deriving the legitimate interest for the party seeking for the standing in the proceedings for the lapse or invalidation of a right of protection for a trade mark.
2. The public administration authority shall neither demand nor make its decision in the matter of the assumption, conduct, or termination of economic activity by an interested party conditional upon satisfaction by this party of additional conditions, including without limitation on the submission of documents or disclosure of information other than that set out in provisions of law.
When deriving the legitimate interest from the aforementioned legal regulations in case of the invalidation proceedings of a trade mark it is necessary to demonstrate why and how the right of protection for PLANTAGINIS R-105263 trade mark affect on the legal position of Gemi Company as an entrepreneur. Each entrepreneur has the right to a trademark if the right is not in conflict as to the form, and the period of validity of the previously acquired trade mark right of the same sign. It was necessary to demonstrate that the GEMI's legitimate interest is relevant to its legal position, because it is current, real, direct and their own (these are the most common elements and features of the legitimate interest), such as verifiability of the legitimate interests and the possibility of obtaining specific benefits. In such cases it concerns the so-called "reflections right" which is creating the legal position of a party not directly, but by a decision of the Polish Patent Office which is "taking back" a right of protection for an earlier trade mark granted to another company.
The SAC rejected the cassation complaint because it has found that GEMI company did not file its request for invalidation PLANTAGINIS R-105263 trade mark rights in order to obtain the right of protection for the disputed mark for its own. It also did not demonstrate the existence of any obstacles to conduct its business during the sale of goods marked with the disputed trade mark.
Posted by: Tomasz Rychlicki @ 13.14
Tags: legitimate interest, non-use, Polish courts, Polish Supreme Administrative Court,